Samsung Electronics America, Inc. v. Proxense, LLC

I'll research this case across PTAB records, district court dockets, and legal press.

Let me dig deeper into the district court posture, the IPR outcomes, and Proxense's background.

Now let me verify the PTAB institution/termination history and the district court settlement timeline.

Case Overview and Background — Samsung Electronics America, Inc. v. Proxense, LLC, IPR2021-01438

The parties. Proxense, LLC is a Delaware LLC (originally incorporated in 2001 as Margent Development LLC and renamed Proxense in 2005) founded by John J. Giobbi and David L. Brown, with R&D operations based in Bend, Oregon. It was a genuine operating company for roughly a decade: from about 2004–2012 it developed biometric mobile-payment and proximity-based "personal digital key" (PDK) technology marketed as "ProxPay," employing over thirty engineers and investing "many millions of dollars" in development, and it drew press coverage as early as 2008–2009 for a fingerprint-secured "wireless wallet." (These background allegations appear in Proxense's own complaints, e.g. Proxense v. Microsoft, No. 6:23-cv-00319 (W.D. Tex.), Dkt. 1 ¶¶34–40, https://www.courtlistener.com/docket/67312721/1/proxense-llc-v-microsoft-corporation/.) The company never achieved meaningful commercial scale, however, and today it is best characterized as a former operating company monetizing an 80-plus patent portfolio through assertion — ip fray describes it as a "former operating company" enforcing biometric authentication and wireless patents, and its campaigns are run by Hecht Partners with Susman Godfrey co-counsel on several matters (https://ipfray.com/staging1/google-follows-samsung-in-settling-patent-dispute-with-biometrics-firm-proxense-in-western-district-of-texas-apple-microsoft-intel-lg-cases-still-pending/). On the other side, Samsung Electronics Co., Ltd. (Korea) and Samsung Electronics America, Inc. are operating companies; the IPR petitioner here is the U.S. subsidiary. Samsung's PTAB counsel is Quinn Emanuel (James M. Glass, Sean T. Gloth, Marissa Ducca), with Mann Tindel & Thompson and others as local/district-court counsel; Proxense is represented by David L. Hecht and James Zak of Hecht Partners. I found no university or government co-owner on the asserted patents.

The accused technology and the patents. The underlying dispute, Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210-ADA (W.D. Tex., filed March 5, 2021), targeted Samsung Pay and the devices that run it — Galaxy S6-and-later phones, tablets, and Galaxy Watch/wearables, including devices with NFC and Magnetic Secure Transmission (MST) contactless payment. Proxense's theory, as summarized from the amended complaint, maps the patents onto (i) biometric data (fingerprint/iris) and an EMV payment token stored in a hardware-backed secure environment (Samsung Knox/Trusted Execution Environment running the "Trusty" OS) as the claimed "tamper proof format" storage and "device ID code," and (ii) transmission of that token to a Token Service Provider such as Visa or Mastercard (the alleged "third-party trusted authority"), with the post-transaction push notification characterized as the "access message" (see the complaint analysis at https://ai-lab.exparte.com/case/dct/txwd/6:21-cv-00210/doc/analysis/73 — a third-party analytic summary, not a court ruling). Proxense asserted five patents: (1) US 8,352,730 — biometric PDK authentication in an integrated device that persistently stores biometric data plus a device ID code and secret decryption value in tamper-proof form, then wirelessly sends the code to a trusted authority to complete a financial transaction; (2) US 9,049,188 — the patent at issue in this IPR, covering a "hybrid device" that combines a personal digital key (PDK) and a receiver-decoder circuit (RDC) coupled by a signal line, enabling applications/functions/services; (3) US 9,235,700 — a sibling of the '188 sharing the same specification and hybrid-device claim family; (4) US 9,298,905 — a continuation in the biometric-PDK line; and (5) US 10,698,989 — a later-issued smartphone-oriented version of the same biometric-PDK method (reported priority chains run from a December 2004 filing through 2015). Claims of the '188 and '700 are substantially parallel, and Proxense conceded at the PTAB hearing that its only non-infringement/validity arguments rested on claim construction of terms like "hybrid device" and "personal digital key" (hearing transcript, Nov. 29, 2022, IPR2021-01438/-01439, https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/).

Procedural posture, venue, and why it matters. The district case was filed in the Waco Division of the Western District of Texas before Judge Alan D. Albright — at the time the single-district-judge, fast-schedule, high-volume patent venue that plaintiffs actively sought out; Proxense fought to keep its later cases (Google, Microsoft, Apple, Intel, LG) in that district, arguing judicial economy based on Judge Albright's existing claim constructions in the Samsung case (ip fray, supra). Samsung answered with five IPRs on August 26, 2021 (IPR2021-01438 on the '188; -01439 on the '700; and -01444/-01447/-01448 on the '730, '905, and '989). The Board instituted only two — the '188 and '700 proceedings, which were consolidated for hearing before Judges Dang, Turner, and McKone (earlier papers also list Judge Arbes) — and denied the other three; Samsung then pivoted to ex parte reexaminations on the '730, '905, and '989. One procedural oddity worth flagging: Proxense miscalculated its preliminary-response deadline and filed a response on November 29, 2021 without authorization; the Board authorized expungement of both that filing and Proxense's motion, effectively resetting the institution deadline (Order, Paper 8, Dec. 7, 2021). Judge Albright construed the disputed terms on January 18, 2022 (Dkt. 149), and the case reached a final pretrial conference in early January 2023, where Samsung's summary-judgment and Daubert motions were largely denied or carried to JMOL (Order Concerning Final Pretrial Conference Motions, Dkt. 161). The case then settled on the eve of trial: the parties filed a joint stipulation of dismissal on January 19, 2023 (Dkt. 168) and the court cancelled jury selection and trial (Dkt. 169). In parallel, the parties notified the Board on January 19, 2023, filed a joint motion to terminate on January 23, 2023 (which said the binding term sheet "fully resolv[ed]" both the IPRs and the district court assertion), and the Board terminated IPR2021-01438 and -01439 on February 24, 2023 without a final written decision (Termination Decision, Paper 31/33, https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/docs/02-24-2023-Board/Termination_Decision__Post_DI_Settlement-31-Termination_Decision__Post_DI_Settlement.pdf). Notably, the Board pressed the parties on § 317(b) compliance because the term sheet promised "Definitive Agreements" within 20 days; the parties then filed the executed confidential "Settlement and License Agreement" (Feb. 23, 2023), which remained sealed. The practical consequence is that no tribunal ever ruled on validity or infringement of any of these patents — the IPR terminated post-institution but pre-final-decision, so no estoppel attached and all five patents retain their presumption of validity, while Samsung (and later Google, per a January 13, 2025 dismissal with prejudice) are generally understood to have taken licenses. That makes IPR2021-01438 a useful case study in two respects: (1) the AIA settlement regime — Samsung won institution on only 2 of 5 petitions, forcing it into ex parte reexamination for the rest, and then bought its way out of a trial-week verdict rather than a Board ruling; and (2) the durability of litigation artifacts — Microsoft and Google both cited Judge Albright's January 18, 2022 claim-construction order as an exhibit in their own 2024 IPRs against sibling Proxense patents (e.g. IPR2024-00846, Ex. MS-1009; IPR2024-01320), and Proxense has since expanded the same portfolio into connected-car digital-key litigation against Hyundai/Kia/Genesis (6:25-cv-00016, W.D. Tex., filed Jan. 14, 2025).

Sourcing caveats: The docket-entry numbers and dates (Dkt. 149, 161, 168, 169) are drawn from a later Proxense court filing that itemized the Samsung docket and from ip fray's contemporaneous reporting, not from PACER directly. The claim-by-claim infringement mapping and the statement that asserted claims of the '905 and '989 were cancelled/disclaimed during reexamination come from a third-party analytic summary of the complaint and should be treated as unverified; the joint motion to terminate confirms only that ex parte reexaminations on the '730, '905, and '989 were pending as of January 2023. I could not independently verify the "rehearing decision" on institution that Samsung's counsel referenced at the November 29, 2022 oral hearing, nor the specific claim constructions the Board and the district court adopted (the public copies I located are OCR-degraded). No Federal Circuit appeal of these proceedings appears in the record I reviewed.

I'll research this case across PACER, PTAB, and legal news sources.

I have good initial data. Let me dig into the district court docket, PTAB institution decisions, and final disposition.

Proxense, LLC v. Samsung Electronics Co., Ltd. — Key Developments

Important framing note: The metadata you gave me (Samsung Electronics America, Inc. v. Proxense, LLC, IPR2021-01438) is the PTAB track of this dispute. The infringement litigation itself is Proxense, LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., No. 6:21-cv-00210-ADA (W.D. Tex., Waco Div.), before Judge Alan D. Albright. The two tracks ran in parallel and the district court case drove the IPRs. I cover both, chronologically.

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1. Filing and initial pleadings (2021)

• 2021-03-05 — Complaint filed. Proxense sued Samsung Electronics Co., Ltd. (Korea) and Samsung Electronics America, Inc. in W.D. Tex., Waco Division, Judge Alan D. Albright, asserting infringement under 35 U.S.C. § 271 and seeking injunctive relief plus damages. The original complaint asserted four patents: US 9,049,188; 9,235,700; 9,298,905; 10,698,989. Accused instrumentality: Samsung Pay and the Galaxy devices running it (Galaxy S6 and later smartphones, tablets, Galaxy Watch wearables), specifically the tokenization + biometric (fingerprint/iris) authentication in the Knox Trusted Execution Environment. Proxense alleged pre-suit notice to Samsung dating to 2017 and pleaded willful infringement.
• 2021-04-01 — Extension of time. Court granted an unopposed extension; Samsung's answer deadline reset to 2021-06-10 (Dkt. 9; text order).
• 2021-03/04 — Pro hac vice admissions for Proxense counsel David L. Hecht, Conor McDonough, Maxim Price, Yi Wen Wu (Hecht Partners) and appearances for Samsung counsel Kevin P.B. Johnson, Victoria F. Maroulis, Marissa Ducca (Quinn Emanuel) and local counsel.
• 2021-06-10 — Samsung's Rule 12(b)(6) motion to dismiss (Dkt. 13), directed at the willful and indirect infringement claims (failure to state a claim), plus Samsung's Rule 7 disclosure statement (Dkt. 14). Source: docket extract reproduced in PTAB/IPR2024-00846 Exhibit 1022. I could not verify the court's disposition of this motion from primary sources — I'd treat it as unresolved on the public record I could reach. (Note: Samsung's later summary-judgment practice included a "no infringement prior to October 2020" theory, suggesting damages/willfulness remained live in some form.)
• 2021-06-17 — First Amended Complaint (Dkt. 19). Proxense added US 8,352,730 as a fifth asserted patent, added an appendix listing accused Samsung devices, and attached the five patents plus EMVCo, Samsung Pay and Knox documentation. The amended pleading is the operative complaint.

2. Parallel PTAB IPR filings (2021)

• 2021-08-26 — Samsung petitions for five IPRs (Quinn Emanuel for Samsung; Hecht Partners for Proxense), one per asserted patent:
  • IPR2021-01438 — '188 patent
  • IPR2021-01439 — '700 patent
  • IPR2021-01444 — '730 patent
  • IPR2021-01447 — '905 patent
  • IPR2021-01448 — '989 patent
  • Panels: APJs Thu A. Dang, Justin T. Arbes, David C. McKone (and Kevin F. Turner for the hearing).
• 2021-11-29 to 2021-12-07 — Procedural mishap / expungement. Proxense miscalculated its Preliminary Response due date, filed a premature POR plus an unauthorized "Motion Requesting Acceptance of Submission," then moved to expunge both. In a 2021-12-06 conference call, the Board (Dang, McKone, Arbes) authorized expungement; Samsung did not oppose, and the new POPR reset the three-month institution clock. (Paper 8, Order, 2021-12-07.)
• Ca. March 2022 — Institution decisions. The Board instituted IPR2021-01438 ('188) and IPR2021-01439 ('700) and denied institution on the other three ('730, '905, '989). Reported contemporaneously by Korean trade press (The Guru), which stated PTAB "denied three and was reviewing two." This means the '730, '905 and '989 patents were never subjected to PTAB validity review in this campaign. (Law360's PTAB case pages for two of the Aug. 26, 2021 filings show "Institution Denied," consistent with this.)
• 2022-05-23 — Patent Owner's Response in the instituted proceedings, relying on the declaration of Dr. Charles Eldering and contesting Samsung's Giobbi/Broadcom combinations on the "local, secured biometric information" and "enabling one or more of an application, a function, and a service" limitations.
• Ca. 2022 — Board adopts a "dispositive" claim construction. At the 2022-11-29 oral hearing, Samsung's counsel stated on the record that under "the disc[positive] construction adopted by the board at institution, reiterated by the board in the rehearing decision, and found by the District Courts… there's no dispute that… the claims are unpatentable." That indicates the Board adopted a construction favorable to Samsung and that Proxense sought (and lost) rehearing of it.

3. Claim construction in the district court

• December 2021 — Markman briefing cycle. Samsung's Reply Claim Construction Brief (Dkt. 37, 2021-12-06) and Proxense's Sur-Reply (Dkt. 39, 2021-12-13). Disputed terms included "hybrid device," "personal digital key," "receiver-decoder circuit," "signal line," and indefiniteness of "hybrid device." Both briefs were later filed as PTAB exhibits (Exs. 2005, 2006).
• 2022-01-18 — Claim Construction Order entered in the district court. Constructions (as reproduced in the parties' PTAB demonstratives; some OCR-garbled — verify against the order):
  • "hybrid device" — a device comprising a personal digital key (PDK) and a receiver-decoder circuit
  • "personal digital key" — an operably connected collection of elements including a transceiver for communication and a controller and [memory for storing] information particular to a user
  • "receiver-decoder circuit" — construed functionally (component/circuit capable of receiving wireless encrypted data for processing)
  • "inheritance information" — information passed [from one device] to a second device for use
  • "biometric information," "financial information," "enablement signal" — no construction necessary, ordinary meaning
• A separate Memorandum in Support of Claim Construction Order was entered 2022-12-28, construing "enabling one or more of an application, a function, and a service" (claims 1/10 of '188; claims 1/11 of '700): an application/function/service is "enabled" by a PDK "when it receives information from a PDK in exchange for an access key." (Order text says the pretrial conference was "January 3, 2022"; other record citations are to "Jan. 3, 2023, Tr.," so the 2022 date appears to be a typo.)

4. Discovery milestones with strategic significance

• 2022-03-07 — Samsung's Final Invalidity Contentions, relying on EP 1,536,306 (Broadcom) and its Article 76 divisionals (EP 2,797,020; EP 3,023,899), plus the Giobbi and Dua references; Samsung waived several combinations. (Proxense Ex. 2011 in IPR2021-01439.)
• 2022-06-08 — Samsung filed ex parte reexamination requests on the '905 patent, concurrently disclosing the analysis to Proxense — a parallel USPTO attack on a patent the Board had declined to institute on. (Samsung later cited the reexam in the district court case.)
• 2022-08-05 — Samsung moved to amend its final invalidity contentions to add the "Pocket Vault" system and new references, arguing no prejudice because expert discovery was months away and no opening invalidity report had been served. (Motion papers reproduced in Microsoft IPR2024-00846 Ex. 1022.)
• Expert discovery included Proxense infringement expert Dr. Aviel Rubin (whose supplemental report Samsung moved to strike), Samsung validity expert Dr. Nielson, and Proxense damages experts M. Laurentius Marais and Jennifer Vanderhart. Samsung's damages expert was W. Christopher Bakewell (Charles River Associates), who was deposed.

5. Pre-trial motions on the merits and the eve of trial (late 2022 – Jan. 2023)

• 2022-11-04 — Board grants oral hearing (IPR2021-01438/-01439), with briefing on demonstratives, objections, and LEAP practitioners.
• 2022-11-29 — Consolidated PTAB oral hearing held by video before APJs Dang, Turner and McKone. Proxense's argument was entirely claim-construction based; Samsung conceded none of the merits if the Board's construction applied.
• 2022-12-29 — Proxense moved to submit the district court's 2022-12-28 claim-construction memorandum to the Board, arguing Samsung was collaterally estopped from a contrary construction of "enabling one or more of an application, a function, and a service" (citing B&B Hardware, Papst Licensing, In re Freeman) — filed one day after the memorandum issued. (Ex. 3002, email from David Hecht to PTAB Hearings, 2022-12-29/2023-01-09.)
• 2023-01-03 — Final Pretrial Conference and omnibus pretrial ruling in the district court. The court ruled on the parties' summary judgment motions, Daubert motions, motion to strike, and motions in limine:
  • Samsung's MSJs (ECF 94): denied — (i) no infringement by devices with the "stub app"; (ii) no direct infringement of method claims; (iii) no method-claim infringement for devices with no registered debit/credit card; (iv) no infringement prior to October 2020. On three of these the court invited Samsung to re-urge JMOL at the close of Proxense's case.
  • Proxense's MSJs (ECF 97): "no divided infringement" granted; indefiniteness of "persistently storing" denied (i.e., Samsung's indefiniteness theory survived); several Samsung indefiniteness/enablement theories denied as moot because Samsung withdrew them; Samsung's "smartphone" theory denied.
  • Dauberts: Samsung's motion to exclude Marais/Vanderhart denied (with leave to voir dire Vanderhart on apportionment); Proxense's motion to exclude Dr. Nielson denied, with the court warning that presenting § 101 evidence to the jury would waive JMOL on Alice step 1.
  • Motion to strike Dr. Rubin's supplemental report: denied, with ordered depositions and a Nielson supplemental report.
  • MILs: Proxense's MIL 4 (excluding reference to claims/defenses no longer at issue) granted; MIL 6 (barring "disparaging Proxense for not successfully selling or licensing the patents") granted in part; others denied.
• No trial verdict. The case was ready for trial in January 2023, but no verdict, judgment of infringement, invalidity ruling, or damages award was ever entered.

6. Settlement and final disposition (2023)

• 2023-01-19 — Joint stipulation / settlement and dismissal. Samsung and Proxense filed a joint settlement submission in W.D. Tex. and Proxense dismissed its claims. Per the recorded docket disposition, this was a stipulated dismissal with prejudice of all claims under Fed. R. Civ. P. 41(a)(1)(ii), each party bearing its own fees, expenses, and costs; third-party reporting (PatSnap) characterizes the termination basis as a consent judgment. No settlement amount or license terms were disclosed. All five patents retained their presumption of validity — no court or the Board ever ruled on their validity or infringement.
• 2023-02-24 — PTAB termination. IPR2021-01438 (and IPR2021-01439) were terminated as settled before any Final Written Decision. The consolidated proceedings ended with the '188 and '700 patents intact on the PTAB record.
• No appeal was taken on either track.

7. Effect of the parallel PTAB proceedings on the litigation

• The IPRs did not stay the district court case — the W.D. Tex. case marched to the eve of trial in ~22 months while the IPRs were pending, so Samsung never got the benefit of a PTAB invalidity ruling to leverage in Texas.
• Samsung's IPR strategy was partially successful: two of five petitions were instituted ('188, '700) and three denied ('730, '905, '989), meaning Samsung was defending three patents in court with no PTAB fallback — leading to the ex parte reexamination of the '905 as an alternative.
• The PTAB's institution-stage construction was adverse to Proxense, and the Board even rejected Proxense's rehearing request; Proxense's counter-move was to import the district court's December 2022 construction and argue issue preclusion against Samsung — a motion that was pending when the parties settled.
• Settlement of the district court case caused the IPR terminations, not the reverse.

8. Related/aftermath proceedings worth tracking (lower confidence)

• Proxense subsequently asserted the same PDK family against Google (No. 6:23-cv-00320-ADA, W.D. Tex.), Microsoft (No. 6:23-cv-00319, W.D. Tex.), and Apple, and terms from the Proxense v. Samsung claim construction order were later cited and adopted in those cases and in Microsoft's IPRs (IPR2024-00573, IPR2024-00846).
• A later Samsung–Proxense W.D. Tex. action appears on the docket as No. 6:24-cv-00283, and there are indications of new, Fish & Richardson-filed IPRs by Samsung against Proxense in 2023–2024. I was not able to verify the scope, patents, or outcome of this second wave from primary sources in the time available — treat as a lead to confirm on PACER/PTAB.

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Caveats on sourcing

• The 2021-06-10 Rule 12(b)(6) disposition and whether Samsung's answer/counterclaims were formally filed that day are not confirmed from PACER in my sources; I saw the MTD (Dkt. 13) and Rule 7 disclosure (Dkt. 14) only.
• The exact institution dates for IPR2021-01438/-01439 are inferred (post-expungement POPR + three months ≈ mid-March 2022) rather than confirmed from the institution decisions themselves.
• The claim construction language above is reproduced from party demonstratives and briefs with OCR artifacts; the operative text is in the 2022-01-18 Claim Construction Order and the 2022-12-28 Memorandum in Support.
• The 2023-01-19 settlement date comes from Korean trade-press reporting (The Guru) describing a joint filing "on the 19th"; the PTAB termination date (2023-02-24) is from the Board docket. The precise ECF number of the district court dismissal/judgment is not in my sources.

Bottom line: Filed 2021-03-05 on five biometric-PDK patents against Samsung Pay; litigated hard through claim construction, expert discovery, five IPR petitions (two instituted), extensive summary judgment/Daubert/MIL practice, and a January 2023 final pretrial conference — then settled on the courthouse steps in January 2023 via a stipulated dismissal with prejudice (recorded as a consent judgment), with the instituted IPRs terminated as settled on 2023-02-24. No verdict, no damages award, no validity ruling.

I'll verify the four known articles and search for additional coverage.

Sources

• Patent Filings Roundup: New and Existing Financial Services NPE Campaigns Dominate a Down Week; Alternative Investment Hedge Fund Sues Chinese Companies in Own Name; Intel and Samsung Clash on Semiconductors - Patent Filings Roundup: New and Existing Financial Services NPE Campaigns Dominate a Down Week; Alternative Investment Hedge Fun...
• 33. Today, Proxense holds 80 patents on related technology, including digital content distribution, digital rights management, m...
• 60. Proxense has been injured and seeks damages to adequately compensate it for Intel's infringement of the 129 Patent
• 34. Proxense was founded in 2001.4 From approximately 2004-2012, Proxense developed, inter alia, mobile payment technologies and...
• DEFENDANTS' OPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS
• Search court records - party Samsung Electronics America - Event: event:(type_exact:'Motion to Seal' outcome_exact:'granted') - not Bryan Moore - - All Courts

• Date	#	Proceeding Text	Details
  			9 Public

• Samsung Electronics America, Inc. v. Proxense, LLC, IPR2021-01438 (P.T.A.B.)
• Proxense v. Samsung: Biometric PDK Authentication Patents | PatSnap - Your Agentic AI Partner
• had settled expectations based on a reexamination proceeding regarding a "great- grandparent" patent to the '039 patent

• #	Date	Proceeding Text	Source
  		10/28/2021)	</td...

• This factor weighs in favor of referral because although Samsung and CM HK are the same parties as in district court, the distri...

I'll research the counsel of record for the petitioner (the "plaintiff" side in this IPR) in IPR2021-01438.

Let me dig deeper into the petition's counsel designations and confirm the full cast.

Let me confirm the docket details, the lead/back-up designations in the petition, and the settlement termination.

Party alignment (important threshold point)

IPR2021-01438 is an inter partes review, not a district‑court infringement suit. The "plaintiff‑side" party in the caption — the party that filed and prosecuted the case — is the Petitioner, Samsung Electronics America, Inc. ("SEA"). The opposing party, Proxense, LLC, is the Patent Owner (the "defendant side"). The caption you gave (Samsung Electronics America, Inc. v. Proxense, LLC) tracks that alignment.

Below I give the Petitioner's (Samsung's) counsel of record, then briefly note the Patent Owner's counsel for completeness, since the two are frequently confused in this family of cases.

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Counsel of record for the Petitioner — Samsung Electronics America, Inc.

All of Samsung's counsel of record in this IPR were from Quinn Emanuel Urquhart & Sullivan, LLP.

Lead counsel

Back‑up counsel

Shared service address for Petitioner: qe-samsung-proxense@quinnemanuel.com (with the individual addresses above).

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Sources / grounding

• Record of Oral Hearing, IPR2021‑01438 & ‑01439, held Nov. 29, 2022 (entered Dec. 14, 2022) — lists Petitioner's representatives as "JAMES M. GLASS, ESQ. / SEAN T. GLOTH, ESQ. of: Quinn Emanuel Urquhart & Sullivan, LLP, 51 Madison Avenue, 22nd Floor"; Glass states on the record, "Jim Glass for Petitioner. With me today is my associate and counsel of record, Sean Gloth." (transcript PDF via Docket Alarm)
• Order Granting Request for Oral Hearing (Paper 22, Nov. 4, 2022) — "FOR PETITIONER: James Glass / Marissa Ducca / Sean Gloth / QUINN EMANUEL URQUHART & SULLIVAN, LLP."
• Order Granting Motion to Expunge (Paper 10, Jan. 27, 2022) and Order Authorizing Motion to Expunge (Paper 8, Dec. 7, 2021) — same three‑attorney Petitioner service block; the Dec. 7 order notes Petitioner was "represented by Mr. James Glass and Mr. Sean Gloth" on the conference call.
• Patent Owner's Notice of Deposition of Dr. Andrew Wolfe (May 3, 2022) — certificate of service identifies the "correspondence addresses of record for the Petitioner": James M. Glass (Reg. 46,729), Sean Gloth (Reg. 75,316) and Marissa Ducca (Reg. 59,807), with the Quinn Emanuel New York and Washington, D.C. addresses and registration numbers quoted above.
• Proxense Power of Attorney, IPR2021‑01444 (Nov. 26, 2021) — served on "Marissa Ducca (Reg. No. 59,807), Quinn Emanuel…, Counsel for Petitioner Samsung."

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For completeness: counsel for the opposing party (Patent Owner Proxense)

If by "plaintiff" you actually meant the patent owner/prosecuting party on the other side, Proxense was represented by:

• David L. Hecht (Reg. No. 61,618) — lead counsel, Hecht Partners LLP, 125 Park Avenue, 25th Floor, New York, NY 10017; he argued for Proxense at the Nov. 29, 2022 hearing.
• James Zak (Reg. No. 60,190) — Hecht Partners LLP, New York.
• In the parallel W.D. Tex. case (Proxense, LLC v. Samsung Electronics Co., Ltd., No. 6:21‑cv‑00210‑ADA), Proxense also used Erick Scott Robinson of Findlay Craft, P.C. (Tyler, TX) for pro hac vice sponsorship — i.e., as local counsel — for Hecht, Conor McDonough, Maxim Price and Yi Wen Wu.

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Caveats

• The exact termination paper (the joint motion/order terminating IPR2021‑01438 and ‑01439 by settlement, after the Nov. 29, 2022 hearing and before any final written decision) was not independently confirmed in my searches; the settled/terminated‑without‑FWD status in your case summary is consistent with the Dec. 29, 2022 email from Proxense's counsel that I located, but I did not retrieve the docket entry itself.
• I found no indication that any Samsung in‑house attorney appeared as counsel of record in this IPR; Samsung's appearances here were firm counsel.
• Kevin P.B. Johnson (Quinn Emanuel, Redwood Shores) appeared for Samsung in the parallel district‑court litigation, not in IPR2021‑01438, so I have not listed him as counsel here.
• Some Board‑compliant email addresses in these filings contain typographical variants (e.g., "quinmenmanuel.com" vs. "quinnemanuel.com"); the correct domain is quinnemanuel.com.

I'll research the counsel of record for Proxense, LLC (the patent owner/respondent in this IPR, i.e., the defendant side) across PTAB filings and related dockets.

I have the core PTAB mandatory notice. Now let me verify whether Proxense updated its counsel designation later in the proceedings, and pull district-court counsel details.

Let me verify the individual attorneys' backgrounds and check for any later counsel changes or additional appearances.

Counsel of Record — Defendant Side (Proxense, LLC) in IPR2021-01438

Threshold framing note (read first)

IPR2021-01438 is an inter partes review, not a district-court infringement action, so the parties are styled Petitioner (Samsung Electronics America, Inc.) and Patent Owner (Proxense, LLC) — there is technically no "defendant." I'm treating Proxense, LLC as the defendant side because that matches the case metadata you supplied (Plaintiff = Samsung Electronics America; Defendant = Proxense). If instead you meant the underlying infringement suit, Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210-ADA (W.D. Tex.), note that the roles invert there — Proxense is the plaintiff and the Samsung entities are the defendants. I've included both sides below so you can use whichever reading you intended, but the primary answer is the Proxense (defendant-side) team.

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1. Proxense, LLC's counsel of record at the PTAB (the defendant side in this case)

Per Patent Owner Proxense, LLC's Mandatory Notices (37 C.F.R. § 42.8(b)(3)–(4)), the designation of lead and back-up counsel is:

• Service/correspondence: Proxense consented to electronic service at proxense@hechtpartners.com, with postal service at Hecht Partners' New York address. (Highlighted PDF of the § 42.8 notices, filed Nov. 26, 2021, is the -01439 analog, Paper 5 — same counsel designation used across the consolidated -01438/-01439 proceedings: https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/docs/11-26-2021-Patent_Owner/Mandatory_Notice-5-Patent_Owner_Mandatory_Notice.pdf)
• Board correspondence lists only these two names for Patent Owner — e.g., the Board's Dec. 7, 2021 conduct order identifies "FOR PATENT OWNER: David Hecht, HECHT PARTNERS LLP, dhecht@hechtpartners.com," and the Board's Nov. 4, 2022 oral-hearing order likewise lists only David Hecht for Patent Owner: https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/11-04-2022-Board/Order__on_Motion-22-ORDER_Granting_Request_for_Oral_Hearing_37_CFR_sec_4270_/
• Who actually argued: At the consolidated oral hearing on November 29, 2022, the transcript lists David L. Hecht, Esq. and James Zak, Esq. of Hecht Partners, and reflects Hecht stating that Zak "will probably be arguing" the substance. Hearing transcript (Paper 25): https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/docs/12-14-2022-Board/Other__Hearing_transcript-25-Other__Hearing_transcript.pdf

Notes on the two PTAB counsel:

• David L. Hecht — founder and co-managing partner of Hecht Partners; a trained electrical/computer engineer and registered patent attorney with USPTO Reg. No. 61,618. Martindale lists him as admitted in NY (2009) and NJ (2008), before the Federal Circuit, and registered to practice before the USPTO (with Texas admission added in 2023). Hecht Partners' own bio states he has appeared in "dozens of patent-related matters, including inter partes review proceedings, for industry giants including Samsung, Raytheon, Huawei, and MediaTek," and was part of the Apple v. Samsung trial team (Apple v. Samsung/"patent trial of the century") and the ITC team that obtained the first exclusion order against Apple. He is repeatedly listed in the IAM Patent 1000 and (2025) IAM 300. Before founding Hecht Partners he was at Quinn Emanuel (2011–2014), Steptoe & Johnson (2014–2018), and Jones Day (2008–2010). Bio: https://www.hechtpartners.com/our-team/david-l-hecht ; credentials: https://www.martindale.com/attorney/david-l-hecht-36693938/
  • Relevance to this case: Hecht is Proxense's lead across the entire Samsung and later Google/Microsoft/Apple Proxense campaigns. His own firm bio describes him as co-lead counsel for Proxense (with Susman Godfrey) in the Google and Microsoft/Apple W.D. Tex. patent suits, achieving "clean sweeps at Markman" and defeating venue-transfer/ mandamus challenges. Note that for the Samsung matter specifically, I found no Susman Godfrey appearance on the docket — Susman Godfrey co-counsel appears tied to the later Proxense campaigns, not this IPR.
• James Zak — USPTO Reg. No. 60,190; Hecht Partners, New York. Designated back-up counsel in the mandatory notices and listed on the hearing transcript as the second chair who was expected to argue. I was unable to retrieve a firm bio confirming his specific prior experience (search steps exhausted), so treat his background as unverified beyond the registration number and his PTAB role here.

Administrative contact (not counsel of record): Selina Kyle (admin@hechtpartners.com) appears on the CC lines of Proxense's correspondence with the Board (e.g., the Dec. 29, 2022 email requesting authorization to file a motion re: claim construction). She is a firm staff/administrative contact, not an attorney designated under § 42.8(b)(3) — do not list her as counsel.

Prosecution correspondence address (separate from litigation counsel): A later petition served Proxense "by serving the correspondence address of record" at Patent Law Works/Proxense, 4516 South 700 East, Suite 290, Salt Lake City, UT 84107 (see IPR2024-00405 petition certificate of service). That is Proxense's patent-prosecution correspondence address, not its IPR litigation counsel.

No other PTAB counsel appeared for Proxense. I found no pro hac vice motion, power-of-attorney change, or amended mandatory notice substituting/adding counsel in IPR2021-01438 before the proceeding was terminated by settlement on Feb. 24, 2023.

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2. Proxense's counsel in the underlying W.D. Tex. action (same defense-side team, plus local counsel)

If by "defendant(s)" you meant the party the IPR is defending, these are the Proxense-side appearances on the district docket, No. 6:21-cv-00210-ADA:

• David L. Hecht — Hecht Partners LLP (New York); lead attorney, admitted pro hac vice (order entered Mar. 18, 2021, on motion filed by local counsel).
• Conor McDonough — Hecht Partners LLP (New York); lead attorney, pro hac vice (granted Mar. 18, 2021).
• Maxim Price — Hecht Partners LLP (New York); pro hac vice (granted Mar. 18, 2021).
• Yi Wen Wu — Hecht Partners LLP (New York); pro hac vice (granted Mar. 18, 2021).
• Erick Scott Robinson — local counsel; he filed Proxense's pro hac vice motions and the motion for extension of time. He was then at Spencer Fane LLP, 3040 Post Oak Blvd., Suite 1300, Houston, TX (erobinson@spencerfane.com); he now appears at Cherry Johnson Siegmund James PC. He is a well-known Waco/ED-Tex patent-litigation local-counsel lawyer and prolific commentator on PTAB and Waco patent practice (bio: https://www.cjsjlaw.com/our-team/erick-robinson).
  • Caveat: A docket excerpt I found also lists a "Kevin Hardy" as "LEAD ATTORNEY" on the Proxense side (possibly a Spencer Fane attorney), but I could not independently verify that appearance — treat it as unconfirmed.
• Docket source for the appearances/PHV orders: https://dockets.justia.com/docket/texas/txwdce/6:2021cv00210/[1125513](/patent/1125513)

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3. Cross-reference — Samsung-side counsel (if you meant the Samsung entities as "defendants")

For completeness (and because the underlying complaint caption puts Samsung in the defendant's chair), the Petitioner/Samsung team in IPR2021-01438 was Quinn Emanuel Urquhart & Sullivan LLP: James M. Glass, Sean T. Gloth, and Marissa Ducca (Reg. No. 59,807, Quinn Emanuel, 1300 I St. NW, Washington, DC). See the Board's Dec. 7, 2021 order ("FOR PETITIONER: James Glass, Marissa Ducca, Sean Gloth, QUINN EMANUEL URQUHART & SULLIVAN LLP"): https://www.docketalarm.com/cases/PTAB/IPR2021-01439/SAMSUNG_ELECTRONICS_AMERICA_INC_v._Proxense_LLC/docs/12-07-2021-Board/Order__Other-8-Order_Authorizing_Motion_to_Expunge.pdf On the district side, Samsung's counsel included Kevin P.B. Johnson and Victoria F. Maroulis (also Quinn Emanuel).

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Sourcing caveats

• The Proxense counsel-of-record designation is directly grounded in the § 42.8 Mandatory Notices text and the Board's own orders/transcripts — high confidence.
• The district-court appearances (Hecht, McDonough, Price, Wu, Robinson) come from a Justia docket sheet and a Proxense litigation exhibit reproducing the W.D. Tex. docket; docket-entry numbers and the "Kevin Hardy" name are not PACER-verified and should be treated as provisional.
• The Settlement and License Agreement that ended the IPRs (filed Feb. 23, 2023) was sealed, and the PTAB terminated the proceedings without a final written decision; nothing in the sealed papers changes the counsel designations above, but I cannot inspect them to confirm no late counsel substitution occurred.
• I was unable to complete a bio search for James Zak, and I could not confirm whether any in-house Proxense attorney (e.g., CEO John J. Giobbi, a named inventor) participated as counsel — no in-house lawyer appears in the PTAB filings I reviewed.

If you want, I can next pull the full PACER docket for 6:21-cv-00210 to nail down every attorney appearance and the exact Dkt. numbers, or verify the "Kevin Hardy" entry.